An International Guide to
Patent Case Management for Judges

7.4 Patent validity and scope: review of Japan Patent Office decisions by the Intellectual Property High Court

This section describes the procedure and the standard of review applied by the IP High Court when reviewing decisions of the TAD of the JPO. These decisions include an appeal decision to refuse to grant a patent, a decision to revoke a patent in an opposition, and a trial decision in a trial for invalidation or in a trial for correction.¹⁴¹

The section first outlines the decisions that may be the subject of review in a revocation action (an administrative lawsuit). It then considers who may commence such actions, the IP High Court procedure and the various grounds that the IP High Court will consider when reviewing a JPO decision, including possible procedural and substantive law defects. These defects may include those related to the eligibility of an invention; novelty and inventive step; and description, support, enablement, clarity and correction requirements.

7.4.1 Overview

When a JPO trial or appeal processes have been finalized, and a decision has been delivered, a demandant or demandee may file an action to revoke certain trial or appeal decisions, including:

• an ex parte appeal decision to refuse to grant a patent;
• a decision to revoke a patent in an ex parte opposition;
• a trial decision in an inter partes trial for invalidation; and
• an ex parte decision to refuse to grant a correction.

Each of these revocation actions falls under the exclusive jurisdiction of the Tokyo High Court and is handled by the IP High Court.¹⁴² If the court finds that a JPO decision is incorrect, the decision will be overturned, and the case will be remitted to the JPO. For example, if the IP High Court decides to overturn a decision by the TAD to affirm an examiner’s decision of refusal, it may only set aside the TAD decision and remit it to the JPO. The IP High Court does not have the authority to grant a patent. A person who is dissatisfied with a judgment of the IP High Court may file a final appeal with the Supreme Court.¹⁴³

7.4.2 Parties

The plaintiff in an action for revocation of a trial or appeal decision¹⁴⁴ is limited to:

• parties and intervenors in the case; and
• any person whose application to intervene in the proceedings of the opposition to the grant of a patent, in a trial or a TAD retrial, is refused.¹⁴⁵

In the case of a request to revoke an ex parte JPO ruling to revoke or not to grant a patent or to refuse to grant a correction, the Commissioner of the JPO becomes the defendant. However, in the case of a request to revoke a decision following a trial for invalidation, the demandant or the demandee (patentee) from the JPO trial will become the defendant.¹⁴⁶

An action for revocation of a trial or appeal decision may be instituted within 30 days of the date that a certified copy of the decision is served.¹⁴⁷ In the case of a trial or appeal decision unfavorable to a foreign party, 90 days may generally be added.¹⁴⁸

In relation to an action for revocation of a decision in a trial for invalidation, there is an issue concerning whether the action for revocation must be instituted by all joint owners if the patent right or the right to the grant of a patent is jointly owned. While Article 132(2) and (3) of the Patent Act provide that the request for a JPO trial must be filed by or against all joint owners regardless of whether the joint owners serve as the demandant or demandee, there is no such stipulation for an action for revocation of a trial decision.

The Supreme Court has held that, when the right to the grant of a patent is shared, an action for the revocation of an appeal decision to refuse an invention in an appeal against an examiner’s decision of refusal is an inherently mandatory joint suit to be filed by all joint owners serving as the plaintiff.¹⁴⁹

In contrast, in an action for the revocation of a trial decision in a trial for invalidation in which a jointly owned patent right was invalidated, one of the joint owners may file an action for revocation of the trial decision. It is understood that this action is intended to achieve the protection of a right as “an act of preservation” in light of each joint owner’s right to an already-established right.¹⁵⁰ This is despite the view that the rights of joint owners should be determined “as a unified matter” before the establishment of a patent right.¹⁵¹

7.4.3 Procedure

The IP High Court makes available on its website Guidelines for the Proceedings of Suits Against Appeal/Trial Decision Made by the JPO in which it requests parties to make the following preparations:¹⁵²

1. 1. Designation of the first date for preparatory proceedings

   The Intellectual Property High Court […] shall designate the first date for preparatory proceedings prior to the first date for oral argument. The Court will send a written inquiry to both parties prior to the designation. Please respond to the inquiry by indicating your opinions for referring your case to preparatory proceedings and candidate dates for the proceedings.

2. 2. Preparations by the parties before the first date for preparatory proceedings

   1. (1) Submission of the first brief and evidence by the Plaintiff

      1. A. Submission of basic documentary evidence

         The Plaintiff should submit basic documentary evidence within about two weeks from the filing of the complaint (the specific date is indicated in the above-mentioned inquiry) along with the description of evidence. Regarding the manner of offering documentary evidence and the type of basic documentary evidence, please refer to “Submission of Documentary Evidence/Evidence in Electromagnetic Data” in the Guidelines and Formats for Proceedings of Suits against Appeal/Trial Decision made by the JPO.

      2. B. Submission of the first brief and evidence other than basic documentary evidence

         1. a. The Plaintiff should submit the first brief no later than ten days before the first date for preparatory proceedings except in cases when the Court designates a specific submission date.

            In this first brief, the plaintiff should state concrete statements of admission and/or denial in the appeal/trial decision and state the grounds for rescission of the decision. All grounds for rescission should be stated in this first brief.

         2. b. All evidence other than basic documentary evidence should be submitted by this point in time. The description of evidence should also be submitted at the same time.

   2. (2) Submission of a written answer by the Defendant

      When the Defendant receives a complaint, the Defendant should promptly submit a written answer that includes statements of the answers to the objects of the claim described in the complaint, and admission and/or denial of each of the fact described in the statements of the claims.

3. 3. The first date for preparatory proceedings

   On the first date for preparatory proceedings, points at issue shall be clarified, and the schedule for the proceeding shall be coordinated considering the deadlines of the Defendant’s brief for rebuttal and the Plaintiff’s brief for re-rebuttal, as well as whether to schedule an explanatory session.

4. 4. Preparations by the parties before the second date for preparatory proceedings

   1. (1) Submission of a brief and evidence by the Defendant

      1. A. The Defendant should submit a brief describing rebuttal to the Plaintiff’s allegation of the grounds for rescission by the deadline set by the Court on the first date for preparatory proceedings (approximately within one month from the first date for preparatory proceedings). All the Defendant’s arguments should be stated in this brief.
      2. B. All necessary evidence should be submitted at this point in time. The description of evidence should also be submitted at the same time.

   2. (2) Submission of the second brief by the Plaintiff

      1. A. Upon receipt of the Defendant’s brief referred to above, the Plaintiff should submit the second brief if there is any re-rebuttal or matter to supplement the argument by the deadline set by the Court on the first date for preparatory proceedings (approximately within one month from the date specified in (1) A. above).
      2. B. Any additional or supplemental evidence in connection with the above should be submitted with the description of evidence.

5. 5. The second date for preparatory proceedings

   The second date for preparatory proceedings, which was designated on the first date for preparatory proceedings, is about one to two weeks from the deadline of submission of the second brief by the Plaintiff as stipulated in 4 (2) above.

   1. (1) Clarification of the points at issue and submission of evidence shall be substantially completed on this date. However, the Court may designate the third date for preparatory proceedings (and more) to continue allegations and submission of evidence as necessary.
   2. (2) Upon substantial completion of the clarification of points at issue and submission of evidence, the Court shall conclude preparatory proceedings and give a notice of the scheduled date for oral argument, in which the outcome of preparatory proceedings shall be stated. (See 7. infra)
   3. (3) Explanatory session may be conducted on the second or third date for preparatory proceedings, or on the first date for oral argument. (See 6. infra)

6. 6. Explanatory session

   1. (1) Explanatory session may be conducted on the second or third date for preparatory proceedings, or on the first date for oral argument. Technical advisors attend the session in general.

   2. (2) Please prepare the following materials for explanatory session:

      1. A. Copies of the submitted briefs and documentary evidence for the technical advisors when involved; and
      2. B. Materials to be used in the explanatory session (submit them as documentary evidence).

7. 7. Oral argument

   Oral argument will be conducted in the courtroom on the designated date. In oral argument, the outcome of preparatory proceedings shall be stated. The Court may request both parties to present five-minute explanation of the points in dispute. Thereafter, the argument shall be concluded and the date for rendition of judgment shall be designated.

8. 8. Rendition of judgment

   1. (1) Judgment shall be rendered on the designated date in the courtroom. The parties are not required to appear in the courtroom on the date for rendition of judgment.
   2. (2) The parties may receive the service of an authenticated copy of the judgment document after its rendition at the office of the court clerk who administers the case. Service by postal mail is also available.

7.4.4 Subject of examination and grounds for overturning a trial or appeal decision

A party who is dissatisfied with the decision may claim that the trial or appeal decision made by the TAD of the JPO – as an administrative agency – is incorrect because of either procedural or substantive law defects (or both) and demand the decision’s revocation. Each of these defects must have had, by itself or together with other defects, an effect on the conclusion of the trial or appeal decision.

Appeals against JPO decisions are administrative lawsuits. In principle, parties to administrative lawsuits can claim and prove any new fact regarding the administrative decision. However, raising new facts or evidence must be limited in proceedings against the JPO so that the parties may receive the benefit of an effective trial by the JPO as a specialized administrative agency before any administrative litigation.

In the Knitting Machine Case,¹⁵³ the Supreme Court ruled that, in suits against JPO decisions, parties could not raise new facts that had not been raised in the trial before the JPO, even if they related to the novelty of the invention or if the same provision of the Patent Act was cited in the earlier proceedings. In other words, in court proceedings challenging a JPO decision, no documents for establishing a new factual basis for the invalidity grounds may be introduced, even for grounds for invalidation under the same provision of the Patent Act.

For example, under the Knitting Machine rule, if a plaintiff claims lack of novelty citing prior art references A, B and C, and the JPO revokes the patent based on the prior art reference A without referring to the prior art references B and C, the IP High Court can only consider prior art reference A when determining the grounds for lack of novelty.

The court will examine issues – such as novelty and inventive step – considered in trials and appeals by the TAD of the JPO. Parties should be given the opportunity to have their case heard both before the JPO and the IP High Court, particularly given that:

• these cases usually involve highly technical matters; and
• the JPO and the court have different expertise and are expected to examine the issues individually.

The JPO is likely to be more experienced than the IP High Court on highly technical matters, although the IP High Court does have judicial research officials with specialized knowledge who support judges in patent cases.¹⁵⁴ The judges of the IP High Court review and decide the validity of the JPO’s decision based on their experience and with the assistance of judicial research officials on the technical aspects of the case.

From this perspective, the 1976 decision of the Supreme Court in the Knitting Machine Case remains applicable today. Furthermore, according to the Supreme Court in the Structure of Food Packaging Containers Case, parties can add new evidence to reinforce their argument based on prior art reference A in an appeal against a JPO decision.¹⁵⁵ If the court finds that the JPO decision regarding prior art reference A is incorrect and must be set aside, the case will be remitted for a new trial before the JPO, and the JPO may then examine prior art references B and C.

7.4.5 Procedural defects and substantive law defects

If a trial or appeal decision is revoked by the IP High Court, the JPO will commence further trial proceedings to issue a new trial or appeal decision.¹⁵⁶

7.4.5.1 Procedural defects

Procedural defects that have been found to affect the conclusion of a trial or appeal decision include, for example:

• serving a copy of a request for a trial to an old (and no longer current) address of the demandee;¹⁵⁷
• a change of proceedings – which should have been oral proceedings – to documentary proceedings, which was unfair and beyond the reasonable discretion of the panel of administrative patent judges;¹⁵⁸ and
• rejecting an amendment without providing an opportunity for the submission of further amendments and opinions on the basis of a notice of reasons for refusal that included new well-known art corresponding to a secondary reference that was not provided in the initial notice of reasons for refusal.¹⁵⁹

7.4.5.2 Substantive law defect

A substantive law defect is deemed to be a ground for revocation because a trial or appeal decision is not correct. A summary of the main grounds for revocation due to a substantive defect is provided in this section.

7.4.5.2.1 Eligibility of invention

The subject to which a patent right is granted is an “invention.” The Patent Act defines an “invention” as a “highly advanced creation of technical ideas utilizing the laws of nature.”¹⁶⁰ To be regarded as an invention, a creation must utilize laws of nature excluding, for example, mere mental activities, purely academic laws or artificial arrangements. Even if an act resulting from a human mental activity is an invention, the eligibility of this “invention” for patent rights is based on the essence of it being directed to providing a technical means for supporting or replacing a human mental activity.¹⁶¹

7.4.5.2.2 Novelty and inventive step

The presence or absence of an inventive step is often used as a ground for the revocation of a trial or appeal decision.¹⁶²

Identification of the presence or absence of inventive step is determined by the JPO in a trial or appeal decision, usually in the following order:

1. 1. identification of the gist of the invention (present invention);
2. 2. identification of the primary cited invention;
3. 3. comparison of the present invention and the primary cited invention;
4. 4. identification of correspondence and difference; and
5. 5. determination of whether the present invention could be easily conceived.

Accordingly, the ground for revocation argued by a plaintiff is usually that some or all of the above five steps have been incorrectly determined by the TAD. If the first four steps have been incorrectly determined, but no error is found in the ultimate decision (Step 5), this will not serve as an effective ground for revocation of a trial or appeal decision.

Step 1 – identification of the gist of the invention. The gist of the invention of a patent is to be understood from the statement in the scope of claims.¹⁶³ In the Lipase Case, the Supreme Court clarified that the gist of the invention – serving as the basis for the examination of the existence of novelty and inventive step – should be determined based on the statement in the scope of claims unless:

• there are “special circumstances” whereby it is not possible to unambiguously and clearly understand the technical meaning of the statement in the scope of claims;
• the statement has an obvious error in light of the statement in the detailed description of the invention in the specification; or
• for certain other reasons.¹⁶⁴

However, when identifying the gist of the invention, it is acceptable to read through the statement in the detailed description of the invention and the drawings to clarify technical details relating to the invention. The Lipase Case presents a theory that elements described only in the detailed description of the invention and the drawings should not be added beyond the statement in the scope of claims.¹⁶⁵ That is, the elements described only in the detailed description of the invention and the drawings should not be considered if they extend beyond the scope of claims outlined in the statement.

Step 2 – identification of the primary cited invention. The primary cited invention is an invention that:

• is common knowledge within Japan or in a foreign country prior to the filing of the patent application;
• has been publicly worked; or
• is described in a distributed publication or made available online for public use.¹⁶⁶

Step 3 – comparison of the present invention and the primary cited invention. For identification of correspondence and difference, the most suitable reference is typically selected as a principal reference to compare with the present invention.

Step 4 – identification of correspondence and difference. The IP High Court will compare the present invention with the primary cited invention to investigate:

• whether there is any error in correspondence or difference as identified in a trial or appeal decision; and
• whether any further correspondences or differences that were not identified in the trial or appeal decision exist.

Step 5 – determination of whether the present invention could be easily conceived. It is often disputed whether a difference identified by comparing the present invention and the primary cited invention would have been easily conceived by persons having ordinary skill in the art at the time of the filing of the application.

The court usually investigates whether the differences identified in Step 3 would have been easily conceivable by those having ordinary skill in the art by combining one or more references (a secondary reference) or well-known technology with the primary cited invention.

The existence of circumstances that may have prevented a person having ordinary skill in the art from easily conceiving the present invention and the advantageous effects of the present invention also affect a decision concerning the requirement of an inventive step.

7.4.5.2.3 Description requirement

Article 36 of the Patent Act stipulates matters that must be included in a patent application. The patent system grants an exclusive right for a certain period to a patented invention in exchange for publication of the invention. Therefore, a defect in the disclosure at the time of the filing of a patent application will prevent the grant of an exclusive right.

7.4.5.2.4 Support requirement

The statement in the scope of claims must comply with the requirement that the invention for which the patent is sought is stated in the detailed description of the invention under Article 36(6)(i) of the Patent Act. This is called the “support requirement.” The support requirement is necessary because

the specification to be attached to the application by a person who seeks a patent granted for an invention primarily has the role of disclosing technical details of the invention to the public and clarifying the scope of effect of the invention after establishment of a patent right (technical scope of patented invention) and therefore, in order to obtain a patent based on the description of the invention in the scope of claims, the statement in the detailed description of the invention in the specification must enable those having ordinary skill in the art to solve the problem of the invention.¹⁶⁷

The support requirement should be determined

by comparing the statement in the scope of claims and the statement in the detailed description of the invention, and investigating whether the invention described in the scope of claims corresponds to the invention described in the detailed description of the invention, and falls within the scope that can be recognized as enabling those having ordinary skill in the art to solve the problem of the invention based on the statement in the detailed description of the invention or not, and whether the invention described in the scope of the claims falls within the scope that is recognized as enabling those having ordinary skill in the art to solve the problem of the invention in light of the common technical knowledge at the time of filing of the application.¹⁶⁸

7.4.5.2.5 Enablement requirement

The Patent Act provides that the statement in the detailed description of the invention must be clear and sufficient in order to enable those having ordinary skill in the art of the invention to work the invention.¹⁶⁹

To determine whether the enablement requirement is satisfied, not only the statement in the specification and the drawings but also common technical knowledge at the time of the filing of the application can be taken into consideration.¹⁷⁰

7.4.5.2.6 Clarity requirement

The invention for which a patent is sought must be clear from the statement in the scope of claims.¹⁷¹ This is called the “clarity requirement.”

In the Pravastatin Sodium Case, the Supreme Court ruled that a product-by-process claim can meet the clarity requirement in exceptional circumstances, such as when it is impossible to specify the product directly from its structure or features at the time of the filing of the application and where excessive expenditure or time is required to identify the product’s structure or features.¹⁷²

7.4.5.2.7 Correction requirement

A patentee may file a request for a trial for correction to correct the specifications, the scope of the claims or the drawings of a patented invention for which a patent right was granted.¹⁷³ However, to prevent any delay if a trial for invalidation is pending, a request for correction is allowed within certain periods in relation to:

• restricting the scope of claims;
• correcting errors or mistranslations;
• clarifying ambiguous statements;¹⁷⁴ and
• rewriting a claim that cites another claim into a claim that does not cite that other claim.¹⁷⁵

Furthermore, due to the so-called prohibition of the addition of new matters, the correction must remain within the scope of matters described in the specification, scope of claims or drawings of the patent.¹⁷⁶ Whether a correction involves the addition of new matters is determined from the perspective of a person having ordinary skill in the art in relation to technical matters derived from the comprehensive interpretation of the specification and drawings. Prohibiting the addition of new matters is intended to prevent unexpected loss by third parties and to ensure that the interests of the patentee and third parties are balanced.¹⁷⁷

A party who is dissatisfied with a decision of correction in a trial decision – that is, an appellant or a patentee whose correction was not granted – may contest the matter in an action for revocation of a trial decision before the court.

When contesting whether a correction was appropriate in an action for the revocation of a trial decision, identification of the gist of the invention before and after the correction needs to be argued by considering the possibility of either the grant or rejection of the correction by the court. Additionally, when a defendant contests the determination of the appropriateness of a correction in the trial decision, the plaintiff must argue against this based on the gist of the invention before or after the correction (or both), taking into consideration the possibility of the court either granting or rejecting the correction.

7.4.6 Effect of judgment

A judgment in an action for the revocation of a trial or appeal decision has the effect of res judicata.¹⁷⁸ This means the court is not allowed to change its final judgment rendered in the action in a possible separate future action. Furthermore, the parties are also prohibited from contesting the judgment in any subsequent action.¹⁷⁹

Where the court finds for the plaintiff in an action for the revocation of a trial or appeal decision, it must revoke the decision.¹⁸⁰ When the court’s decision has become final and binding, the trial or appeal decision is revoked. The final and binding judgment to revoke a trial or appeal decision has an effect on third parties, and the administrative patent judges of the JPO must carry out further proceedings and issue a new trial or appeal decision.¹⁸¹

Under Article 33(1) of the Administrative Case Litigation Act, a judgment of revocation is binding on the administrative agency that made the original administrative disposition or administrative disposition on appeal and any other relevant administrative agency with regard to the case. Accordingly, a decision of revocation is binding on the JPO decision, including any findings of fact and legal interpretation or analysis.¹⁸² Administrative patent judges of the JPO who carry out further proceedings and issue a new trial or appeal decision are prohibited from making a determination in conflict with the determination in the judgment of revocation.